PCT Procedure
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There are two ways in which an invention can be protected abroad. It can either apply directly to those countries of interest, or use the Patent Cooperation Treaty (PCT international application).
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The PCT is an agreement between countries that they will co-operate in order to ease the process of applying for patents in a number of countries around the world. The system is administered by the World Intellectual Property Organization (WIPO) from its headquarters in Geneva, Switzerland.
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The PCT system enables the applicant to make a single application in Malaysia (the international application) and then ‘designate' as many other countries that are involved in the PCT. The PCT system is a patent ‘filing' system, not a patent ‘granting' system. There is no PCT patent or international patent.
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PCT International Application
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The Intellectual Property Corporation of Malaysia (MyIPO) acts as a Receiving Office. The PCT application should contain the following :
- a PCT Request form (PCT/RO/101)
- a description of the invention with claims, an abstract and drawings (if any)
- the appropriate fees.
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All international applications file with MyIPO must be in the English language; as either a paper based application (in 3 copies) ; or an electronic application (using WIPO's ePCT electronic filing).
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The application form may be posted directly to us or hand delivery at our Head Office in Kuala Lumpur ; or lodge them at any branch Offices in Sabah or Sarawak.
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Fees
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There are three main fees that must accompany the application. These are the transmittal fee, the international filing fee and the search fee. The transmittal fee covers the work completed by MyIPO, the international filing fee covers the work completed by WIPO and the search fee covers the work completed by an International Searching Authority (ISA).
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MyIPO collects the transmittal fee but the two other fees are sent to the WIPO and ISA respectively. All fees must be paid in Malaysian Ringgit (RM).
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International Search Report
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An International Searching Authority (ISA) is to undertake an international search, that is, to identify any ‘prior art' or written material in determining whether or not the invention is new. The results of the international search can help the applicant to evaluate his chances of getting a patent in the countries that he designates.
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The following ISAs specify by MyIPO that will undertake the international search :
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Publication
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All applications are published usually eighteen months after the application date or priority date if the applicant claiming priority. WIPO produces a journal called the PCT Gazette, which is published every week. It contains the summary page of all applications. The PCT Gazette is also available on the WIPO Internet site.
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International Preliminary Examination
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If the applicant choose to have an international preliminary examination, an International Preliminary Examining Authority (IPEA) will undertake it. The applicant must make a specific ‘demand' , and should be submitted directly to the IPEA. The IPEA will examine the application and send an international preliminary examination report which will give the applicant an opinion on whether his invention suitable for a patent to be granted.
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The following IPEAs specify by MyIPO that will undertake the international preliminary examination :
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The National Phase
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The applicant has to enter the national phase in order his international application to proceed separately in any or all of the countries which are party to the PCT. The applicant has up to 30 months after his priority date to enter the national phase in Malaysia.
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The applicant should notify MyIPO by :
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- submit a copy of the international application in the English language
- pay the prescribed fee using Form 2A Applications which entered the national phase shall comply with the requirements of the Malaysian Patents Act. The decision on granting patents is taken exclusively by MyIPO in the national phase.
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A PCT patent application is not a primary patent application (i.e. it does not obtain a granted patent covering a number of countries), but rather provides a route to file a central application which is converted to national and regional applications (listings of each given
here) and so allows the inventor to delay the filing of these patent applications. This gives the inventor time to test the invention, raise capital & decide in which markets the invention is likely to be successful. Over
130 regional and national offices are covered by the PCT (coloured in blue in the map below). Filing international applications with the PCT is becoming increasingly popular, with the two millionth application filed recently.
PCT contracting states as of April 2010
Main Objectives of the PCT
- To lodge one application, with one Office and in one language,
- Formal examination by a single patent office,
- Good International search & examination reports,
- Provides more time to the applicant.
A priority patent application for an invention is filed in one country, and after the priority date is obtained, a PCT issued by
WIPO may be used to preserve the right to file the same invention in each country under the PCT. The PCT claims the priority date from the initial patent application. An international search report, and international examination (optional) are issued centrally from the PCT application. The PCT application then
enters national phase, by far the most expensive aspect of the application process as fees need to be paid to each national patent office during filing, prosecution and maintenance, as well as to local attorneys. The PCT does allow these costs to be deferred, usually for up to 30 months from the priority date. Once the PCT has entered national phase, the resulting applications are treated as national or regional. Individual independent patents may then be granted for each country/region, according to local laws.
What is the PCT Receiving Office?
The Receiving Office is the Intellectual Property office in which you file your initial three copies of your international application with one request form. The Receiving Office will then check the application to ensure you have met all of the formal requirements for the PCT. One copy of the application is retained, one copy is forwarded to the International Bureau (IB) of WIPO, and the final copy (when GB is the Receiving Office) is sent to the EPO who act as the International Searching Authority (ISA) for the application.
PCT Timeline
A simple timeline for the limits for international PCT applications filed on or after 1 January 2004 is shown below. A
helpful tool to calculate time limits for submission of priority document, international publication and entry into the national/regional phase is available free-of-charge from WIPO.
PCT Timeline
Where to File?
When the PCT application reaches national phase entry, all
contracting states bound by the PCT are potential states for filing the national phase application. By thinking carefully about their market, and their resources, the applicant can select a subset of the states to actually file their application into.
What are Patents?
Patents are granted for inventing new and useful processes, machines,articles of manufacture or compositions of matter. The inventor is granted limited monopoly rights for 20 years from filing in return for public disclosure of the invention. The monoply gives the inventor the right to exclude others from making, using, offering to sell, or selling the invention.
Types of Patents
Utility patents are the most common and may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. Patentable processes include software programs, business systems, methods of operating a device, new uses of an old devices, and methods of making a product.
Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and
Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.
What Protection Do I get?
Once filed, the application is "Patent Pending". This provides notice to competitors, but does not provide any legal protection.
After the patent has been granted, protection lasts for 20 years from the date of filing. The patent marking and number must be applied to the product in order to maximize the right to collect damages in a patent infringement lawsuit.
Patent protection is a little unusual in that it is a "negative" right. The inventor has the right to exclude others from making, using, offering to sell, or selling the invention, but the inventor does not necessarily have the right to make, use, offer for sale, or sell their invention. For example, if you were to patent an improvement on an existing patent, you would be given the negative right over only the improvement. The original inventor has the negative right to prevent you from using the original part, and you have the negative right to prevent the original inventor from usign the improvement. Licensing and the sale of patents allows one or both parties to use both the original technology, plus the improvement.
The Patent Process
Obtaining a patent ideally takes around 18 months from start to finish, but frequently takes far more time. Below are the basic steps for obtaining a patent, but keep in mind the patent process is not a simple one and may include additional steps.
Step 1: Filing a Patent
A patent application is filed with the United State Patent and Trademark Office (USPTO). This can be done by the inventor (Pro Se), but the USPTO recommends it be done by a licensed patent attorney or agent due to the complexity of the process.
The main areas of the application include:
- Drawings: The drawings illustrate the invention, and will be required for most applications.
- Detailed Description: This is a highly detailed written description of the invention that provides enough detail that someone in the same field could create, and use the invention.
- Claims: The claims provide the scope of protection for the patent, and as such are the most important part of the application.
A patent can be filed as a provisional or a non-provisional.
- Provisional: A provisional is typically an incomplete patent used to establish your filing date. It is cheaper than a non-provisional, and gives you 1 year in which to file a non-provisional.
- Non-Provisional: A non-provisional is your finished application that begins the examination process.
Step 2: Patent Examination (Non-Provisional)
Once received by the patent office, the examination process begins. The first review is simply a formality review to make sure everything complies with the requirements. Once that is complete, the application is assigned class/subclass based on the type of technology, and assigned to an examiner. At this point the examiner will then conduct substantive examinations of the application. Through a series of Office Actions and responses, the patent attorney works with the examiner (and modifies the application as needed) to try and get the application allowed.
Step 3: Patent Granted
Once the application has been allowed, the inventor must pay the issue fee and the publication fee, at which point the USPTO grants the patent. In order to maintain the patent protection, maintenance fees are due at 3.5, 7.5 and 11.5 years. Failure to pay the fees will result in the patent being abandoned, at which point protection is lost.
Time 0, file in any 1 country part of PCT (patent cooperation treaty group); get prior art protection from this date. 12 months to improve application, get more data.
12 months get search report and written opinion, can amend claims – full filing (PCT), 20yr patent lifetime from here.
18 months publication of patent application, protection from infringement
30 months nationalisation stage, file in individual countries of choice, can enforce from here